Diageo North America, Inc. v. W.J. Deutsch & Sons Ltd. et al
| Diageo North America, Inc. |
| W.J. Deutsch & Sons Ltd. and Bardstown Barrel Selections LLC |
| 1:2017cv04259 |
| June 6, 2017 |
| US District Court for the Southern District of New York |
| Foley Square Office |
| Louis L. Stanton |
| Trademark |
| 15 U.S.C. ยง 1114 |
| Plaintiff |
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The following documents for this case are available for you to view or download:
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Filing
520
ORDER: IT IS HERBY ORDERED that the parties' request to bring physical bottles, including alcoholic beverage bottles, into Court and the Hearing Courtroom for use as exhibits is hereby GRANTED. The bottles that may be brought into Court must be either empty or full and securely sealed. The parties are permitted to bring said bottles into Court for use during the Hearing on Tuesday, December 20, 2022. (Signed by Judge Louis L. Stanton on 12/19/2022) (rro)
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Filing
519
ORDER: Oral argument of Deutsch's Motion for a Pre-Release Compliance Determination under the Permanent Injunction (Dkt. No. 516) will be held on December 20, 2022 at 2:30pm. Deutsch shall bring to the hearing an actual sample of the proposed i nterim redesign of the Redemption bottle. Deutsch is also directed to provide an actual sample to opposing counsel at least twenty-four hours before the hearing. If the proposed bottle cannot be produced by then, counsel shall so notify the Court and the hearing will be adjourned until sufficient prior notice can be provided to Diageo. (Signed by Judge Louis L. Stanton on 12/16/2022) (ml)
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Filing
512
ORDER denying 504 Motion re: 504 MOTION Defendants Emergency Motion for a Pre-Release Compliance Determination Under the Permanent Injunction . Deutsch's Motion for a Pre-Release Compliance Determination Under the Permanent Injunction (Dkt. No. 504) is denied for the reasons stated on the record at the December 7, 2022 hearing. (Signed by Judge Louis L. Stanton on 12/8/2022) (rro)
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Filing
511
ORDER IT IS HEREBY ORDERED this 5th day of Dec that the parties' request to bring physical bottles, including alcoholic beverage bottles, into Court and the Courtroom for use as exhibits during the December 7, 2022 conference is GRANTED. The bottles that may be brought into Court must be either empty or full and securely sealed. The parties are permitted to bring said bottles into Court for use on Wednesday, December 7, 2022. IT IS SO ORDERED. (Signed by Judge Louis L. Stanton on 12/5/2022) (jca)
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Filing
506
ORDER with respect to 504 Motion Defendants Emergency Motion for a Pre- Release Compliance Determination Under the Permanent Injunction re: 504 MOTION Defendants Emergency Motion for a Pre-Release Compliance Determination Under the Perm anent Injunction . Good cause appearing, the expedited briefing schedule respecting Deutsch's four options for a proposed redesign of the Redemption packaging is set as follows. Diageo's opposition to the motion, if any, is due by Wednesday November 23, 2022, and Deutsch's reply is to follow by Wednesday November 30, 2022. SO ORDERED.. (Signed by Judge Louis L. Stanton on 11/18/2022) (kv)
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Filing
501
ORDER with respect to 476 Motion for Clarification of Permanent Injunction. The situation is controlled by the language of the Injunction. The Permanent Injunction ordered Deutsch "to undertake a change to the Redemption glass bottle and pac kaging that will convey a substantially different commercial impression."Dkt. No. 468 at 36. It required that the "Redemption package must have no superficial, at a glance, resemblance to the Bulleit bottle." Id. No customer can be in doubt; nor can there be a question about the bottle's difference from that of Diageo. Those provisions bar the Sur Lee bottle design's proposedhalf-step alterations to the Redemption packing just as effectively as the Safe Distance Rule would. Deutsch's motion for clarification is denied. So Ordered. (Signed by Judge Louis L. Stanton on 11/7/2022) (ml)
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Filing
484
ORDER: IT IS HEREBY ORDERED this 26th day of Sept that the parties' request to bring physical bottles, including alcoholic beverage bottles, into Court and the Courtroom for use as exhibits during the September 27, 2022 conference is GRANTED. The bottles that may be brought into Court must be either empty or full and securely sealed. The parties are permitted to bring said bottles into Court for use on Tuesday, September 27, 2022. (Signed by Judge Louis L. Stanton on 9/26/2022) (rro)
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Filing
468
OPINION, ORDER & INJUNCTION re: 450 MOTION for Permanent Injunction / Plaintiff Diageo North America, Inc.'s Notice of Motion for a Permanent Injunction. filed by Diageo North America, Inc. Accordingly, IT IS HEREBY ORDERED T HAT: Deutsch Family Wine & Spirits and Bardstown Barrrel Selections LLC, their agents, and any third parties who are in active concert or participation with the manufacture, sale, or promotion of Redemption who receive notice of this injunction are permanently restrained and enjoined nationwide from, directly or indirectly, manufacturing, selling, offering for sale, distributing, licensing, importing, exporting, advertising, promoting, displaying, or using in commerce, including in st ores, online, and in physical, digital, or recorded advertisements or promotional materials, the Diluting Redemption Packaging at issue in this litigation and any other colorable imitation thereof, except for the product that on the date of entr y of this Order has already been transferred to distributors, retail stores, bars, or restaurants. That product in the Redemption packaging that has been transferred by the date of entry of this Order may continue to be sold, but none thereafter. Defendants are directed to undertake a change to the Redemption glass bottle and packaging that will convey a substantially different commercial impression, but may retain those unchallenged aspects of the package like i) the brand name Redemptio n or terms such as "pre prohibition" or "rye revival;" ii) the label, other than its border; iii) the embossed rye "frond;" and iv) the concave back of the bottle. If defendants do not create a meaningfully changed Redemption Packaging, such that it cannot dilute the Bulleit trademark and trade dress, Deutsch may be directed to use its present upper-tier barrel-proof Redemption whiskey bottles, with only minor changes sufficient to signify that the bottle does not contain its present premium product. This Court shall retain jurisdiction over the parties and the subject matter of this litigation for the purpose of interpretation, enforcement, or modification of this Permanent Injunction. (Signed by Judge Louis L. Stanton on 9/7/2022) (rro)
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Filing
421
ORDER: The parties' initial additional submissions, if any, under Rules 50(a) and 50(b) of the FRCP, along with the text proposed for any injunction, shall be made by July 1, 2022, with responses thereto by July 21, 2022 (Signed by Judge Louis L. Stanton on 6/3/2022) (ml)
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Filing
399
ORDER: IT IS HEREBY ORDERED this 25th day of March that the parties' request to bring physical bottles, including alcoholic beverage bottles, into Court and the trial Courtroom for use as exhibits at trial is GRANTED. The bottles that may be brought into Court must be either empty or full and securely sealed. The parties shall take steps to ensure that all physical bottles are secured and locked when Court is not in session. The parties are permitted to bring said bottles into Court for use during trial beginning on Wednesday, May 11, 2022, and throughout the duration of the trial. (Signed by Judge Louis L. Stanton on 3/25/2022) (rro)
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Filing
390
ORDER granting 331 MOTION in Limine #1 for an Order Precluding Defendants' Reliance on Wholly Dissimilar Third-Party Bottles.; denying 344 MOTION in Limine #3 for an Order Precluding Defendants from Introducing Belatedly Produced Cost Information; granting 348 MOTION in Limine #4 for an Order Precluding Defendants from Introducing Irrelevant and Prejudicial Evidence Concerning Non-Parties; denying 313 MOTION in Limine to Preclude Evidence of Exclusive Rights in Specific Aspects of Bottle Design. Diageo's Motions in Limine Nos. 1, 3 and 4, and Deutsch's Motion in Limine No. 4, are resolved as follows: Diageo No. 1: Seventy or less bottles selected by defendants should be more than sufficient to show simila rity. Diageo No. 3: Defendants' delay in production of costs seems substantially justified. Defendants must produce all the supporting material they will offer at trial by September 30 and plaintiff may take discovery respecting it by November 3 0. Diageo No. 4: There shall be no reference, direct or indirect, by any party, witness, lawyer, or person participating in this t rial, about Tom Bulleit's alleged misconduct, or publicity about it, in an opening statement, questioning of any w itness, argument or address to the Court, offer of evidence, or at any time within the possible hearing of any juror. Any attempted, or effected, circumvention of this order may be punished as a contempt of court. Counsel must so instruct their witne sses. If there is an unexpected change of circumstance, counsel may apply in camera, after fair notice to their adversary. Deutsch No. 4: Denied. Arguments about functionality and generic design features are for a properly instructed jury. (Signed by Judge Louis L. Stanton on 8/19/2021) (jca)
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Filing
371
ORDER: Diageo's application for leave to move to strike Deutsch's Motions in Limine is denied. Both parties' motions in limine listed in their June 23stipulation so-ordered by this Court on June 30 are denied without prejudice and wi th leave to renewal at trial, except for Diageo's Motions in Limine # 1, 3, and 4, and Deutsch's Motion in Limine # 4. Those will be dealt with as scheduled in the stipulation and order. (Signed by Judge Louis L. Stanton on 7/1/2021) (ml)
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Filing
285
IN LIMINE ORDER: denying 205 Motion in Limine; denying 208 Motion in Limine; denying 212 Motion in Limine; denying 213 Motion in Limine; denying 215 Motion in Limine; denying 222 Motion in Limine; denying 225 Motion to Seal; deny ing 227 Motion in Limine; denying 230 Motion in Limine; denying 233 Motion in Limine; denying 236 Motion in Limine: that both sides' motions to exclude the other's experts are denied. (Signed by Judge Louis L. Stanton on 2/9/2021) (ml)
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Filing
239
ORDER denying 211 Motion to Seal; denying 221 Motion to Seal; denying 226 Motion to Seal. Defendants move to file several exhibits to their motions in limine under seal: Martin Jones's Expert Report (Dkt. 211), Phillip Hampton, II& #039;s Expert and Rebuttal Reports (Dkt. 221), Glenn May's Rebuttal Report (Dkt. 226), and Bryan Van Uden's Deposition Transcript and three Redemption financial documents (Dkt. 225). The public right to access judicial documents is " ;firmly rooted in our nation's history." Lugosch v. Pyramid Co. of Onondaga, 435 F.3d 110, 119 (2d Cir. 2006). The documents at issue are "relevant to the performance of the judicial function and useful in the judicial process" ; of deciding defendants' motions in limine, so the public has a right to access them. See Id. at 119. And the mere existence of a protective order calling for the sealing of documents designated confidential provides no support for " specific, on-the-record findings that sealing is necessary to preserve higher values...."See Id. at 124. Accordingly, defendants ' motions to file under seal are denied. Defendants must forthwith publicly file in unredactedform the exhibits they previously filed under seal. So ordered. (Signed by Judge Louis L. Stanton on 12/28/2020) (nb)
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Filing
187
ORDER denying 184 Motion for Reconsideration. Genuine issues of material facts concerning the similarities between the Deutsch and Bulleit bottles' trade dress, consumer confusion and applicable Polaroid factors require the denial of defendants' motion for partial summary judgment and their motion for reconsideration. (Signed by Judge Louis L. Stanton on 4/7/2020) (rro)
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Filing
181
MEMO ENDORSEMENT denying 133 Motion for Summary Judgment; denying 143 Motion for Summary Judgment; denying without prejudice to renewal 148 Motion to Strike. ENDORSEMENT: DIAGEO NORTH AMERICA, INC. v. W.J. DEUTSCH & SONS LTD. d/b/a DEUTSCH FAMILY WINE & SPIRITS, and BARDSTOWN BARREL SELECTIONS LLC, 17 Civ. 4259 (LLS). Genuine disputes as to material facts: Whether the statement to the patent office that "The bottle shape is unique and distinctive in the bev erage alcohol industry. The bottle shape is readily identifiable and distinguishable from all others in the industry, and accordingly stands out as such on a store shelf or behind a bar even apart from the embossed working and design element s" was fraudulent and known to Diageo to be false. Whether Diageo has abandoned, by not enforcing, any rights it had to claim originality in the Bulleit bottle design. Whether the Bulleit bottle design is functional and une ntitled to Lanham Act protection. See the full discussion of applicable considerations in Stormy Clime Ltd. v. Pro Group, Inc., 809 F.2d 971 (2d Cir. 1987), require the denial of plaintiff's motion for summary judgment dismissing defenda nts' amended counterclaims and affirmative defenses (dkt. 143) and defendants' motion for partial summary judgment (dkt. 133). Diageo's motion to strike evidence (dkt. 148) is denied without prejudice to renewal at trial. (Signed by Judge Louis L. Stanton on 3/11/2020) (mro)
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Filing
131
AMENDED MEMORANDUM OPINION & ORDER: Accordingly, none of the materials submitted with Deutsch's counsel's letters to the Court of January 7, 2020 and February 7, 2020 will be held under seal or redacted. So Ordered. (Signed by Judge Louis L. Stanton on 2/13/2020) (rro)
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Filing
130
MEMORANDUM OPINION & ORDER: Accordingly, none of the materials submitted with Diageo's counsel's letters to the Court of January 23, 2020 and February 7, 2020 will be held under seal or redacted. So Ordered. (Signed by Judge Louis L. Stanton on 2/12/2020) (va)
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Filing
122
ORDER. Accordingly, the present filings are stricken and will not be considered, without prejudice to submissions containing no redactions. Thus, the parties control what they wish to submit, and submit it publicly, and have time to obtain such excep tions to this ruling as may be justified on individual documents, statements, or other evidence. Each presently-effective date for the submission of those motions and responses is extended for 60 days to allow the parties to accommodate the necessary alterations in their submissions. So ordered. Terminating 82 Motion for Summary Judgment; Terminating 84 Motion for Partial Summary Judgment; Granting 114 Motion to Strike. (Signed by Judge Louis L. Stanton on 12/3/2019) (rjm)
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Filing
43
OPINION & ORDER re: 27 MOTION to Dismiss Defendants' Counterclaims. filed by Diageo North America, Inc., 35 MOTION to Dismiss Defendants' Amended Counterclaims. filed by Diageo North America, Inc.: The motions to dismiss Deutsch's second, third, and fourth counterclaims (Doc. Nos. 27, 35) are denied. (Signed by Judge Louis L. Stanton on 1/23/18) (ml)
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