When Big Storm Brewery CEO Jonathan Golden learned that his brewery could face legal action from use of a trademark, he instead sued Boynton Beach's Due South Brewing Company. But he's not suing for damages or even asking for a trial.
Golden told the New Times that he wants to get clarification from a federal judge on use of the word "category" in beer labels. On July 15, Big Storm was slapped with a cease and desist letter for using a beer label that Due South said was too similar to theirs.
In the lawsuit filed on August 22 in the U.S. District Court for the Middle District of Florida, Big Storm claims there is no evidence that Due South owns the exclusive rights to the word "category."
In question is Big Storm's use of the Saffir-Simpson Hurricane Wind Scale — a system used to rate the strength of hurricanes — to label its seasonal series of Belgian abbey-style beers. The beers, which Big Storm has had since February 2016 and which are mostly confined to the brewery's tap room, use the word "category" to describe the alcohol potency of each one. For example, a Belgian quadruple is a Category 4.
Due South owner Mike Halker says his brewery has been making Category 3, Category 4, and Category 5 IPAs for years. Due South held a registered trademark with the federal government for Category 5 IPA, but it has since expired.
Halker says it's really an issue because both breweries nearly overlap in distribution territory, and there is a possibility that consumers could get confused.
Although Due South beer gets distributed to most of Florida, Halker says there is a stretch of area between Tampa and Fort Myers where his beer doesn't go — at least not yet. Golden says one of his Belgians has reached at least three accounts across the Tampa area. Breweries in other states use the category in their labels too, but Halker says he's already worked it out with them.
"If someone is using, let's say, the Category 5 name in Maryland, we don't distribute to Maryland, so it's not a big deal to us," Halker previously told the New Times.
Golden not only says that the beers are distinguishable, the hurricane scale is fair use and that's the reason why he's asking for a judge's opinion.
Here is a statement on the lawsuit that Due South owner Mike Halker emailed to the New Times:
Obviously all of the folks in the Due South family are disappointed about being sued by Big Storm. We just found out yesterday, so we're still trying to get our feet under us as far as this is concerned.
It is my understanding, and my opinion as I'm not an attorney, that even though we've been brewing Category 3, Category 4 and Category 5 for over four years, they are suing us so a judge will allow them to use these names for beers they've recently released. I also believe if we lose, we also have to pay all of their attorney fees and costs. I'll reiterate, I'm not an attorney and this is simply what it looks like I'm reading. I'm a Veteran and my wife is a former school teacher so we don't know much about the way these things work. We're counting on some other folks who have experience in this type of litigation to help us navigate this issue correctly.
We're keeping our chins up over here at Due South and will continue making our beer as we always do. I'd like to thank our fellow brewers around Florida who have been so supportive with this and all of the folks who continue to support our brewery in the market.
According to the U.S. Copyright Office, fair use is an exemption that allows the use of protected works in certain circumstances, such as in news reporting or research. Courts generally rely on four factors in determining whether something is fair use.
"It's not about damages," Golden told the New Times. "We feel that we have the right to use the category system, I feel Due South has the right to use the category system. We just want to get clarity in the market."
Despite the seemingly endless bounds of creativity, name conflicts happen — even when the they aren't exactly the same — and breweries simply adjust to avoid litigation. In a similar dispute in 2014, Tampa-area Coppertail Brewing Company sued Boynton Beach's Coppertop Brewing Company—which is now called Copperpoint Brewing Company.
The point is to "police your mark" and avoid confusion, says Ross Appel, an attorney with Hollywood's Komlossy Law and has experience in dealing with brewery trademark disputes.
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The product doesn't necessarily have to be exactly the same or in the same country for that matter. Earlier this month, a New York federal jury ruled that Adirondack Pub and Brewery was infringing on Canada's Moosehead Breweries for its "aggressive" marketing of Moose Wizz root beer, according to the National Post.
Golden says he's not going to stop making his Belgians. In fact, Golden told the New Times Big Storm has a "Category 5 Belgian Quintuple" coming out soon.
Read a copy of the lawsuit below: