Saturday, June 25, 2016

Kentucky Mist Case Not Exactly What It Seems

There is something wrong with the way the Kentucky Mist v. University of Kentucky (UK) case is being reported and it is embodied in these two photographs from the Lexington Herald Leader (Kentucky's best news source, by the way). 

From most of the reports about this case it is easy to arrive at the following conclusions: (1) Kentucky Mist is a tiny, fledgling company being stomped on by a giant university. (2) UK wants to 'own' the word 'Kentucky' and prevent anyone else from using it. (3) The U.S. District Court for the Eastern District of Kentucky has sided with the big, bad university.

The proof that things are not exactly as they seem is in these pictures. The sign on the building says 'Kentucky Mist Moonshine.' The hats and other apparel they sell inside say 'Kentucky Mist Moonshine.' The name 'Kentucky Mist Moonshine' appears on all of the company's products.

Has UK made any effort to stop Kentucky Mist from using the name for any of those purposes? The evidence shows that it has not. UK merely objected to Kentucky Mist's effort to trademark its name for purposes such as use on apparel. The University of Kentucky already has a trademark for those purposes. UK is not objecting to Kentucky Mist trademarking its name for distilled spirits products and no one is objecting to Kentucky Mist actually using the name on apparel.

“The plaintiff here misstated UK’s intentions early on, attempting to create a controversy,” wrote Judge Danny Reeves in his decision. According to the New York Times, UK objected to Kentucky Mist's filing originally because they wanted to get an agreement from Kentucky Mist that it wouldn't use Royal Blue and White for its apparel, which are UK's colors. Instead of negotiating, Kentucky Mist filed suit. The result has been a lot of press coverage, millions of dollars worth of free publicity for Kentucky Mist.

So what about Kentucky Mist Moonshine itself? Well, 'moonshine,' first of all, is not a type of distilled spirit. It is any distilled spirit made illegally. So 'Legal Moonshine' is an oxymoron. Distillers and marketers use it to tap into the term's romantic outlaw connotations, especially in Kentucky's eastern mountain region where Kentucky Mist is located. Since moonshine isn't a type of distilled spirit, the product's actual type must be shown on the label. Kentucky Mist is 'spirits distilled from cane,' so sugar shine, a mash made from sugar (the same stuff you put in your coffee) that is fermented and distilled, at some alcohol concentration below neutrality (i.e., less than 95% ABV). 

That is pretty authentic. Table sugar is what most 'real' (i.e., illegal) moonshiners use because it is readily available, cheap, and easy to ferment. According to their web site, Kentucky Mist actually distills its product, unlike some well-known moonshine marketers who use commercially produced GNS. That's a good thing. Not so good is their attempt to link the founder's moonshining ancestor to Al Capone when both were in Atlanta Federal Prison. Capone was there only from 1932 until 1934 and already suffering from the syphilis that destroyed his mind. That the progenitor of Kentucky Mist "formed a good friendship" with Capone as claimed is highly unlikely.  

Legal alcohol producers should think twice before associating themselves with criminals and criminal activities.

The web site writer also doesn't understand the difference between a moonshiner (a maker of illegal spirits) and a bootlegger (a person who sells spirits illegally). 

Kentucky Mist seems to feel it has been done a great injustice but the facts say otherwise.


Unknown said...

You've already mentioned this in your post but I always found this sort of association with criminal figures, especially Al Capone, to be rather... well, to the least to say, odd. We're talking about America's most notorious gangster here, boss of the Chicago outfit who made millions through criminal activities - and people want their brand to be associated with him?

Granted, yes, those distilleries that were operational during the prohibition era are generally not too shy about telling you how much whiskey they sold for "medicinal purposes" but selling medicinal whiskey (with prescription) and being associated (albeit not directly) to a gangster are two very different things. I'd really like producers to steer away from making this kind of connections - especially if it isn't true.

Erik Fish said...

Americans just like the criminal mystique, as long as it's far enough in the past. And if the Al Capone name-dropping rubs you the wrong way, remember George Remus Bourbon, sourced from MGP and bottled by someone called Queen City Whiskey. Remus was the "King of the Bootleggers" in Cincinnati and ended his criminal career by murdering his wife in front of lots of witnesses on the way to the divorce hearing, and got himself aquitted. She did cheat on him with the Treasury agent who had put him in jail.

Ray said...

Thanks for putting some more meat on the the bones of this Kentucky Mist vs UK thing.

Anonymous said...

This comment is difficult to write, because of state laws restricting the practice of law in that state and the presumption that anyone representing himself as a lawyer and offering an opinion on a legal matter is practicing law there. I have practiced trademark law professionally for more than four decades, but I am offering this comment anonymously for what it contributes.

The word "trademark" is a noun; when a layman uses the noun as a verb, the sentence containing the verb almost always is problematic. In the United States, rights to use, and to exclude others from using, a trademark are acquired ONLY by actual use of the mark in commerce. Trademark law is a subset of the common law of unfair competition. The United States government, and the governments of most states, have a procedure for REGISTERING existing trademarks, but the registration creates only procedural presumptions, not substantive rights; substantive rights derive only from actual use in commerce.

Title 15, section 1052(e), of the United States Code codifies certain common law rules as to what can be recognized as a trademark. Generally, indications of geographic origin, even if accurate, fall under what trademark lawyers call "generic" words, and cannot function as trademarks. Even in the rare instance that geographic designations are allowed to be registered as marks the courts will regard them as "weak" marks, and severely limit their scope to the narrowest possible reading. To take an example apart from the Kentucky case, American Airlines may be able to prosecute a case of infringement against another airline that wants to call itself "American Airline," but would likely fail to make a viable case for infringement against an airline that advertised that it is "AN American Airline."

The University of Kentucky is playing a high stakes case of chicken here, and should the case be litigated, it risks the possibility not only that it might not succeed against Kentucky Mist, but the court could declare that its rights to limit others' rights to use "Kentucky" overall are more severely limited than has been explicit heretofore, and may be invalid in all instances.

Anonymous said...

Born in Somerset, college at EKU, a bar called Specks is where we drank our 3.2 long neck beer, and then a short drive to Fayette County for Rebel Yell.
It was better to stumble back to the dorms than to get in cars.
Very strange, but we adapted.
Thanks for the blog.
Brings back memories.